TRADEMARK INFRINGEMENT IN CYBERSPACE
By Karen Roberts and Robert Neller
Andy Warhohl predicted in the 1960’s that, “In the future everyone will have their 15
minutes of fame.” Well, the future is here and, thanks to the Internet, people are snatching their
moments of fame on the Web and gaining instantaneous worldwide recognition for themselves,
their goods and their services. However, in doing so, some are usurping and trading on the fame
and good will of others, making cyberspace the new frontier where established consumer
protection policies are being tested and stretched to fit the landscape. One such area of
protection policy is trademark law where the tension between protected trademarks and their
unauthorized use in web sites has resulted in an explosion of infringement cases. This article
discusses the various forms of cyberspace infringement, as well as how we, as attorneys, can
guide our clients to avoid costly overzealousness.
On the Internet, a domain name is the address at which a web site may be located. A
domain name is not itself a trademark and to procure such an Internet address, one need only
register a domain name which, until recently, was registered on a first-to-file basis without
further examination. Because domain name filings were not subject to scrutiny, cyberpirates
reserved other’s trademarks as their domain names or embedded those marks in their web sites in
order to hawk their goods or extort money from trademark owners.
In general, a trademark is a word, logo, color or any combination thereof used to identify
the source of a good or product. A service mark is virtually the same, but is used to identify a
service rather than a good (both are referred to herein as trademarks).
Trademark infringement generally occurs when one uses a mark in commerce that is
identical to or confusingly similar to another’s trademark. Lanham Act §32(1), 15 U.S.C.A.
§1114(1); Lanham Act §43(a)(1)(A), 15 U.S.C.A. §1125(a)(1)(A). In cyberspace, trademark
infringement can occur at various levels within a web site and sometimes even upon the mere
registration of a domain name.
It appears settled that while mere reservation of a domain name is not infringing, liability
may attach where the registration is coupled with wrongful intent. Jews for Jesus v. Brodsky, 993
F. Supp. 282, 307 (D. N.J. 1998); Juno Online Servs. V. Juno Lighting, Inc., 979 F. Supp. 684,
691 (N.D. ILL. 1997). One form of wrongful intent is the intent to extort money from the
trademark owner for the domain name. This has become known as “cybersquatting” or
“hijacking” and is actionable under trademark law. Panavision Int’l L.P. v. Toeppen, 945 F.
Supp. 1296, 1303 (D.C.Cal. 1996), aff’d, 141 F.3d 1316, 1324 (9th Cir. 1998); Jews for Jesus;
Juno Online Servs.
Cybersquatting also occurs where an entity intentionally registers a domain name
containing a competitor’s name or trademark (or an obvious misspelling of them) and does so
not with the intention of selling the domain name, but to prevent the competitor from using its
own mark. Courts have found this hoarding of marks actionable because it creates the
implication that the competitor is out of business or not using the domain. Green Products Co. v.
Independence Corn By-Products Co., 992 F. Supp. 1070 (N.D. Iowa 1997)
In what is being billed as the single biggest crackdown on cybersquatters, three Olympic
governing bodies have filed suit to shut down more than eighteen hundred web sites that use
domain names incorporating the trademarks “Olympic,” “Olympics,” “Olympiad” and
derivations of these names. The rogue sites run the gamut from pornography to gambling.
While this case is pending, the gravamen is that the registrants are using the marks in bad faith
and are improperly profiting from the official Olympic trademarks.
Similarly, Yahoo! successfully obtained a ruling that the address “campyahoo.com” was
confusingly similar to its own trademarks by demonstrating that the owner of
“campyahoo.com,” DomainCollection, registered the domain name in bad faith for the purpose
of extorting money either from Yahoo! or its competitors. Telecommunications giant AT&T
won against WorldclassMedia.com to claim the domain names “attmexico.com” and “att-
latinamerica.com” where it was found these registrations also were made in bad faith.
Conversely, the famous entertainer Sting failed to recover “sting.com” because he could not
show that registration was done in bad faith: the name Sting was not the singer’s real name (his
name is Gordon Sumner) and Sumner had not registered the word “Sting” (a common English
word) as a trademark or service mark.
Trademark infringement claims also arise based upon use of another’s trademark in a
web site’s metatags and keywords.
Metatags are invisible code embedded in a web site that are detected and prioritized by
search engines to enhance the usability of the Internet. The use of purely generic or descriptive
terms is not problematic, but legal issues of trademark infringement arise when the metatags
contain trademarks or confusingly similar marks to confuse or deceive the public. However,
where there is a legitimate reason for the use, the use may be allowed under the fair use
In one of the earlier cases, a defendant used the Playboy and Playmate trademarks not
only in its domain name, but also embedded in its metatags, thereby, diverting consumers to its
website. The court enjoined the unauthorized use and required defendant to cancel its domain
name registration. Playboy Enterprises, Inc. v. Calvin Designer Label, 985 F.Supp. 1220 (N.D.
Playboy, however, was not successful in a later case where it sued a former Playmate of
the Year for trademark infringement because her web site and metatags also contained the words
Playboy and Playmate. The court found her use on the web site to have a legitimate reason and
was a “fair use” because the words truthfully identified her background and accomplishments.
Playboy Enterprises v. Welles, 7 F.Supp.2d 1098 (S.D. Cal. 1998).
Recently, the Ninth Circuit held that a competitor could not use another’s trademark in its
metatag because it caused “initial interest confusion” – i.e., consumers looking for plaintiff’s
web site were diverted to defendant’s web site and simply stopped searching when they found a
satisfactory substitute. The court found trademark infringement, not because there was actual
consumer confusion as to the source of the goods or services (consumers recognized they were at
a competitor’s site), but because defendant diverted Internet business to its site and initially
benefited improperly from the goodwill plaintiff had developed. Brookfield Communications,
Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999).
Another type of metatag is the keyword metatag. Keywords are advertising “trigger”
words that may be purchased from an Internet search engine to display an advertising banner
when a user enters a particular search term into the search engine. A case is currently pending in
New York on the very issue of whether anyone can purchase a keyword that is a trademark
without the consent of the trademark owner, or whether such an unauthorized purchase
constitutes trademark infringement. Estee Lauder Cos. V. Fragrance Counter Inc. (S.D.N.Y.
No. 99 Civ. 0382 (RWS) 9/24/99).
At the extreme, in two separate cases where the trademarks at issue were not identical,
the courts automatically found infringement without analyzing whether the marks were
confusingly similar. These decisions create unfortunate and potentially chilling ramifications.
Planned Parenthood of Am., Inc. v. Bucci, 42 U.S.P.Q. 2d 1430, 1441 (S.D.N.Y. 1997) and Jews
for Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J. Mar. 6, 1998). In these cases, the courts reasoned
that the mere web presence of two competing entities made it unnecessary to analyze the
similarity of the goods or services, or the zone of natural expansion. The fact that each was
competing on the Internet meant that the parties offered similar services to similar consumers,
and, thus, were infringing.
Hyperlinks (“Links”), the basic Internet navigational tool that allows users to connect
from one site to another can also result in trademark infringement. When the linking page
suggests approval by the owner of the linked page, or the linking page does not identify the true
source of the information, consumers are wrongly led to believe the linked page is the
information of the linking page. See Ticketmaster Corp. v Microsoft Corp. (C.D. Cal. Filed
April 28 1997) (‘deep-linking’ lawsuit, settled April 1999).
Similarly, “framing” is the practice of maintaining a page border from the originally
accessed site onto the linked site. Trademark infringement occurs in this context when the
framing obscures the identity or source of the linked page and leads to consumer confusion by
suggesting a different source of the information or goods than the correct source. In Washington
Post v. Total News (S.D.N.Y. filed 2/20/97) a group of on-line news organizations sued Total
News, in part, on grounds of trademark infringement based on defendant’s use of framing to
import content from plaintiffs’ sites within the frame of defendant’s advertising-laden web site.
The case settled with the defendant Total News agreeing not to frame without the permission of
the plaintiff news organizations.
In some situations, the First Amendment may be invoked as a defense to allow a web site
operator to continue an unauthorized use of another’s trademark when the operator’s use of the
other’s trademark and identity are considered constitutionally protected. This protection may
arise because the use is newsworthy in that it carries a message of public or social interest, the
use constitutes artistic expression, or is a form of entertainment or is based on parody. In Lyons
Partnership v. Giannoulas, 51 USPQ2d 1364 (5th Cir. 1999), the creator of “Barney” the purple
dinosaur unsuccessfully sued for trademark infringement arising out of a comedy skit in which
the characters, including Barney, engaged in an exaggerated punching and wrestling match. The
court granted summary judgment in favor of defendant based on the First Amendment.
However, in another action, the plaintiff American Dairy Queen successfully obtained a
preliminary injunction enjoining use of a movie title ostensibly parodying beauty contests in
Minnesota. The court found the American Dairy Queen mark to be infringed and diluted by the
movie title. American Dairy Queen Corp. v. New Line Productions Inc., 35 F.Supp.2d 727
“Gripe Sites” also have been found to be constitutionally protected free speech. These
sites are set up by parties who register, as a domain name, a variation of a company’s trademark
and dedicate the sites to electronically “roasting” a corporation. See Bally Total Fitness Holding
Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998). In Bally, defendant’s use of the domain
name ballysucks.com was considered protected speech because the site clearly communicated it
was not authorized by plaintiff and its purpose was to provide a forum for consumer commentary
on Bally health clubs.
As the Internet grows the remaining available domain names is shrinking. The Internet’s
oversight body, Internet Corporation for Assigned Names and Numbers is in the process of
accepting proposals to expand this pool of addresses by approving the addition of approximately
six new domain suffixes. New domain names with suffixes such as “.movie” or “.travel” are
being considered. While the policies on how these new domain names will be allocated have not
been resolved, the same issues will have to be handled concerning such legal issues as trademark
In light of the quickly evolving nature of cyberspace trademark infringement, clients
must take a number of precautions. Clients should avoid registering a domain name that is
identical to or confusingly similar to or an obvious misspelling of another’s trademark. Clients
also must be counseled to avoid the use of another’s trademark anywhere in their web site,
including metatags or keywords unless the use is for a legitimate reason. Care also must be
taken to avoid confusion as to the source of the content when framing or linking. Links, should
clearly indicate that they are to another’s web site and if clients wish to secure the benefit of
affiliating a link, permission or cross-linking agreements should be obtained from the site owner.
Alternatively, the client should incorporate disclaimers advising users that they are being
directed to a third-party site.
As the Internet continues to expand, legal issues surrounding it will continue to grow
with the developing electronic commerce. As the courts, the public and lawyers become more
knowledgeable about this new means for doing business, trademark laws will evolve into a more
consistent set of policy guidelines structured for the realities of electronic commerce. We can
only hope that this understanding will come in time to protect everyone’s 15 minutes of fame.